Re: Design No. 125547 by VINIDEX TUBEMAKERS PTY LIMITED, application for extension of the period of registration; and a notice, under S.27A(4) by KEY PLASTICS PTY LTD, of material relevant to newness or originality of the design

[1998] ADO 1

official notice

decision of a delegate of the REGISTRAR OF DESIGNs

Design:          No. 125547 in the name of VINIDEX TUBEMAKERS PTY LIMITED.

Article:          Waste gully

Action:          Application by Vinidex Tubemakers Pty Limited for extension of the period of registration; and a notice, under S.27A(4), by Key Plastics Pty Ltd, of material relevant to newness or originality of the design.

Decision:          Issued  .

Abstract:There are three notable differences between the applicant’s and the informant’s designs.  These differences are all more than immaterial details.  On the available evidence there is also nothing to show these differences are features commonly used in the waste gully trade.

Consequently the applicant’s design is new and original over the informant’s design.

The period of registration of the applicant’s design was extended.

DESIGNs act 1906

decision of a delegate of the REGISTRAR of DESIGNs

Re:Design No. 125547 by VINIDEX TUBEMAKERS PTY LIMITED, application for extension of the period of registration; and a notice, under S.27A(4) by KEY PLASTICS PTY LTD, of material relevant to newness or originality of the design. 

background

Vinidex Tubemakers Pty Limited (Vinidex) applied to register a design on 16th May 1995.  The design related to a waste gully.  The application proceeded to registration on 9th January 1996, initially for a twelve month period.  On 13th December 1996, Vinidex applied to extend the period of registration.

Key Plastics Pty Ltd (Key Plastics) filed a notice under S.27A(4) on 9th December 1996.  This notice mentions the existence of material relevant to newness or originality of Vinidex’s waste gully design.  Specifically the notice refers to an earlier design, 112400, as being of relevance against the Vinidex design 125547.  A day after filing the notice, Key Plastics filed a supporting statutory declaration by Mr Barry Robert Newsome, operations manager for Key Plastics.

Vinidex filed a response to Key Plastics’ notice and supporting declaration on 24th December 1996.

On 4th June 1997 the Designs Office advised the parties that the registrar of designs proposed not to extend the period of registration of design 125547.  The letter stated the registrar was of the opinion that design 125547 is not a new or original design over the material provided by Key Plastics.  A copy of the deputy registrar’s reasons for coming to that opinion was also attached. 

Vinidex subsequently requested a hearing.  The hearing took place in Sydney on 24th October 1997.  Mr Geoff Davidson, attorney of Halford & Co, represented Vinidex.  Mr Jack Redfern, attorney of Shelston Waters, represented Key Plastics.

THE DESIGN

The registered design 125547 is applicable to a waste gully.  The statement of monopoly reads:

“Monopoly is claimed in the features of shape and configuration of a waste gully as shown in the accompanying representations.”

The representations show perspective, front, end, plan and inverted plan views of a waste gully.  The perspective view is reproduced below.

THE INFORMANT’S MATERIAL

Key Plastics’ S.27A(4) notice asserts the registered design 125547 is not new or original in the light of their own registered design 112400.  The latter design was published before the priority date, 16th May 1995, of design 125547.  Mr Newsome’s declaration asserts the “representations accompanying the registered design (125547) are substantially identical in all respects to those accompanying our registration.  Any visual difference is only so minor as to be immaterial detail, or alternatively, a feature commonly used in the fitting trade.”

The perspective view of the Key Plastics design 112400 is reproduced below.

THE REGISTERED OWNER’S RESPONSE

Vinidex responded to Key Plastics’ material by highlighting a number of differences between the designs of 112400 and 125547.  These differences are tabulated in the next section.

THE DEPUTY REGISTRAR’S OPINION

The deputy registrar notes eight differences between designs 125547 and 112400 as outlined by Vinidex in their response to the S.27A(4) notice.  The differences are as follows:-

Designation.	Description	112400	125547
a.	Tops of sockets	Top of smaller diameter socket is substantially below the level of the larger socket.	Substantially level.
b.	Bottoms of sockets.	Bottoms of the two sockets are level.	Bottom of the smaller socket at a height above that of the larger socket.
c.	Smaller socket.	Portion at top to receive sealing ring.
d.	Ridges on U-shaped portion.	Ridges in shallow V-shape.
e.	U-shaped connecting portion in region just below the larger socket.	Convex.	Concave.
f.	Spacing between sockets.	There is a space between the sockets over the entire length of the smaller socket.	The sockets abut over most of their length.  There is a small space adjacent the bottom of the sockets.
g.	U-shaped connecting portion.	Necks down in diameter more rapidly than in 112400.
h.	U-shaped connecting portion.	Relatively symmetrical, continuously curved.	More asymmetric.

In the main the deputy registrar concluded the differences were immaterial and therefore design 125547 was not a new or original design over 112400.

APPLICABLE LAW

Subsection 17(1)(a) of the Designs Act 1906 provides as follows:

“17.(1)Subject to this Act, a design shall not be registered unless it is a new or original design and, in particular, shall not be registered in respect of an article if the design-

(a) differs only in immaterial details or in features commonly used in the relevant trade from a design that, before the priority date in respect of the application for registration, was registered, published or used in Australia in respect of the same article;”

In considering whether the registered design is new or original it is the appearance of the design as a whole as judged by the eye alone which is important.  The eye should be that of an instructed person; that is, the eye of one who knows what was common trade knowledge and usage in the class of articles to which the design applies (Phillips v Harbro Rubber Co (1920) 37 RPC 233). Ordinary trade variants, routinely used in the trade and introduced into an old design, do not make a new or original design.

A design which differs from an earlier design in small details requires careful consideration since immaterial details would deprive a design of newness or originality.  This consideration needs to be made having regard to the nature of the article (Le May v Welch (35 AOJP 2512)) and to the fundamental form and development of such articles in the trade (D Sebel & Co Ltd v National Art Metal Co Pty Ltd ((1965) 10 FLR 224)).

The D Sebel (supra) case also states the onus lies with the party asserting invalidity of the design registration to establish that that is the case.

DECISION

Filing of the informant’s material.

The first point to address is whether Key Plastics filed their material in time.  Mr Davidson submitted Key Plastics served Mr Newsome’s declaration out of time and consequently the declaration should not be given any weight.

S.27A(4) enables a person to lodge a notice up to eleven months after the date of registration of a design.  That notice may set out any matter that the person considers to be relevant to the question of newness or originality of the design.  That matter must also have been published in a document in Australia before the priority date of the relevant design application.

Regulation 24 states the notice may, in addition, be accompanied by a declaration setting out the facts on which the person giving notice relies.

In the present case Key Plastics lodged their notice on the last allowable day, 9th December 1996, which is eleven months after design 125547 was registered.  The company lodged the Newsome declaration to support the notice a day later on 10th December.

While S.27A(4) clearly sets a deadline for lodging a notice, there is nothing in the Designs Act or Regulations that specifically sets a deadline for lodging a supporting declaration. Regulation 24 merely states a notice may be accompanied by a declaration. This does not necessarily preclude an informant lodging a declaration after lodgement of the notice.

A further point is whether Vinidex has been disadvantaged by the later lodgement of the declaration.  The Designs Office sent a copy of the notice and the declaration to Vinidex concurrently one week after Key Plastics lodged the notice.  Consequently the lodgement of the declaration by Key Plastics after lodgement of the notice has not caused any serious delay in informing Vinidex of the full facts relating to the notice.   

I accept that I ought to give Mr Newsome’s declaration appropriate consideration in this case.

Relevance of the informant’s material.

On the other hand I find Mr Newsome’s declaration of limited assistance.  He simply notes the two designs are substantially identical in all respects and that any visual difference is an immaterial detail or a feature commonly used in the fitting trade.  Mr Newsome has not provided details of why he comes to this conclusion.  Without any enunciation of differences in the two designs it is difficult to determine how Mr Newsome establishes that any difference is immaterial or merely a trade variant.

Mr Newsome’s declaration is also not corroborated by other evidence from independent experts in the trade.  In this respect I note that Mr Newsome is a manager of the informant, Key Plastics.  Consequently his declaration carries less weight than that of an independent expert.

Application of the law.

Mr Redfern noted the statement of monopoly of design 125547 does not limit the design to anything but the totality of the waste gully as illustrated in the drawings.  He further mentioned the Macrae Knitting Mills Ltd v Lowes Ltd ((1936) 55 CLR 725) decision to support the view that it is the overall impression conveyed to the eye by the respective designs which is important rather than a comparison of individual features in isolation. In this respect Mr Redfern submitted that designs 112400 and 125547 were substantially identical.

Mr Redfern also relied on the D Sebel (supra) case to note that subtle differences could be important in some areas but still the design must be distinctive to the trained eye.  He applied Mr Newsome’s comments to state that the instructed or trained eye of the person working in the waste gully trade did not perceive the differences between the two designs to be significant.  In other words the trained eye of the person working in this trade regarded these differences as immaterial.

Mr Davidson similarly noted the differences between the two designs need to be measured as perceived by visual comparison (Firmagroup Aust. Pty Ltd v Byrne and Davidson Doors (Vic) Pty Ltd ((1987) AIPC 90-410)). He also mentioned it is important to consider the nature of the article (Le May (supra)).  Waste gullies are a field where designers are constrained by functional requirements.  Accordingly Mr Davidson noted that one should not expect to find startling novelty in the waste gully design.  He suggested that elements of newness and originality in this case would be within a small compass and still be capable of registration (D Sebel (supra)).

I accept it is the overall impression conveyed to the trained eye which is an important consideration.  However, in respect to my earlier comments concerning Mr Newsome’s declaration, I do not have adequate evidence of what impression is conveyed to the trained eye in this case.  I also accept waste gullies are a field of article not readily lending themselves to startling changes of design.  With these factors in mind I will compare designs 125547 and 112400.

The overall differences: designations (c) and (e).

On an overall comparison of designs 125547 and 112400 there are two differences that readily appear to me.  These are denoted as (c) and (e) in the above-mentioned deputy registrar’s opinion. 

The first (designation (c)) is that the Vinidex design has an enlarged diameter portion at the top of the smaller socket to receive a sealing ring.  The deputy registrar concludes the socket is well known in plumbing fittings.  Mr Redfern further submitted that Vinidex has not provided evidence to contradict the deputy registrar’s opinion that this feature was commonly used in the trade.

Mr Davidson submitted there was insufficient evidence to show that a socket with an enlarged diameter portion at the top was commonly known.  He said the catalogue accompanying the deputy registrar’s opinion, by Hardi Iplex Pipeline Systems, did not establish common usage throughout the trade.

I must agree with Mr Davidson on this point.  The onus resides with Key Plastics to establish that certain features are merely trade variants, if that is the case.  While enlarged diameter portions on the top of sockets may be known, there is insufficient evidence before me to show this feature was commonly used in the waste gully trade before May 1995.

The feature is also more than an immaterial detail.  The enlarged diameter portion at the top of the smaller socket is readily apparent.  The feature is also significantly different from the unchanging diameter of the smaller socket of the Key Plastics design.

The second difference (designation (e)) is the concavity of the Vinidex design below the larger socket compared to the convex nature of this area of the Key Plastics design.  Mr Davidson noted this is a significantly different appearance.

To my mind the Key Plastics design clearly has a bulbous appearance below the larger socket.  By contrast the Vinidex design reduces in diameter more rapidly below the larger socket.  This gives the Vinidex design a narrower appearance in this area.  These features of the two designs are distinct in appearance and are consequently not immaterial details.

Both of the above differences are readily apparent to the eye.  Consequently I cannot consider them as immaterial details.

The remaining differences.

The remaining differences are not as strikingly evident from an overall view.  I will however analyse these differences to determine whether they are immaterial details.

Designation (a).

The tops of the small and large sockets of design 125547 are level while the top of the smaller socket of design 112400 is below that of the larger socket.  I think this is a noticeable difference. In fact the difference appears to be approximately of the same magnitude as the size of the enlarged diameter portion (designation (c)) shown on the smaller socket of design 125547.  Consequently there is a material difference in respect to the tops of the sockets in the two designs.

Designation (b).

The bottom of the smaller socket in design 125547 is at a height above that of the bottom of the larger socket.  In design 112400 these heights are level.  The front elevational and perspective views of design 125547 most clearly show the difference in height.  From these views the difference in height is so small as to be insignificant.  Consequently the difference between the two designs on this point is immaterial.

Designation (d).

The ridges on the U-shaped portion of 112400 are in a shallow V-shape.  These ridges are so shallow as to make no discernible difference compared to design 125547.

Designation (f).

Design 112400 has a space between the sockets whereas the sockets of design 125547 abut over most of their length.  The extent of the space between the sockets of design 112400 is so small compared to the overall dimensions of the design as to be immaterial.  Consequently there is no material difference between the two designs on this point.

Designations (g) and (h).

These designations relate the concave or convex nature (designation (e)) of the U-shaped portions of the two designs.  Since I have dealt with this aspect of the designs I do not need to consider designations (g) and (h) further.

Mr Davidson also mentioned the deputy registrar’s tabulation did not include the difference of the immediate cut-out of the U-shaped portion just below the larger socket of design 125547.  I similarly regard this feature as relating the concavity of the design.  Consequently I likewise need not consider this feature further.

CONCLUSION

There are three notable differences between designs 125547 and 112400.  The first is that design 125547 has an enlarged diameter portion at the top of the smaller socket to receive a sealing ring.  The second is the concavity of design 125547 below the larger socket compared to the convex nature of this area of design 112400.  The third is the difference in the levels of the tops of the sockets. 

These differences are all more than immaterial details.  On the available evidence there is also nothing to show these differences are features commonly used in the waste gully trade.  Consequently design 125547 is new and original over design 112400.

Accordingly I extend the period of registration of design 125547.

COSTS

Both parties submitted that costs should follow the event.  I am not aware of any reason to depart from this practice.  Key Plastics have not been successful with their S.27A(4) notice.  Consequently I award costs against Key Plastics Pty Ltd.

M.G. Kraefft

Delegate of the Registrar of Designs

Attorneys for the applicant  :  Halford & Co, Sydney

Attorneys for the informant   :  Shelston Waters, Sydney